Ex Parte Morikawa et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201711979277 (P.T.A.B. Feb. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. IPE-060-022 6680 EXAMINER MENON, KRISHNAN S ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 11/979,277 10/31/2007 20374 7590 02/27/2017 KUBOVCIK & KUBOVCIK P. O. Box 548 ANNANDALE, VA 22003 Hirofumi Morikawa 02/27/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROFUMI MORIKAWA, SHUJI FURUNO, and MASAHIRO HENMI Appeal 2014-009951 Application 11/979,277 Technology Center 1700 Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY R. SNAY, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s Final Rejection of claims 1—4, 6, and 9. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants’ claimed invention is directed to a sewage treatment method including, inter alia, a step of immersing a separation membrane module into wastewater containing activated sludge, wherein the separation membrane module includes a plurality of separation membrane elements with each such element including, inter alia, a flat separation membrane. The wastewater is separated into filtered water and suspended solids by Appeal 2014-009951 Application 11/979,277 permeating through the separation membrane. Air is supplied to the surfaces of the separation membranes of the separation membrane elements. Each separation membrane comprises a nonwoven fabric and a porous resin layer wherein part of the resin of the resin layer permeates into the nonwoven fabric forming a composite layer with the fabric. The nonwoven fabric porous resin layer and composite layer have a specified relative thickness relationship. The pores of the resin layer surface have a specified average pore size in the range of 0.01 to 0.2 pm at the surface and the pores include a specified standard deviation [variation] of pore size of 0.1 pm or less at the surface. Appellants disclose that “[t]he average pore size and the standard deviation are determined based on diameters of all micropores which can be observed in a scope of 9.2 pm by 10.4 pm by scanning electron microscopy at a magnification of xl0,000” (Spec. 4,11. 9-12). Appellants teach that a “separation membrane satisfying such ranges exhibits both a high permeability for a long time without clogging and a high rejection, which means that fungus and sludge do not leak” (Spec. 9,11. 17-24). Further details are evident from a review of claim 1, the sole independent claim on appeal, which claim is illustrative and reproduced below. 1. A method of sewage treatment comprising: immersing a separation membrane module into wastewater which includes activated sludge and is contained in a reservoir, wherein the separation membrane module comprises a plurality of separation membrane elements, and a housing containing the separation membrane elements, wherein each separation membrane element comprises a supporting plate, a separation membrane and a filtered water outlet and 2 Appeal 2014-009951 Application 11/979,277 wherein the separation membrane is a flat membrane and is arranged on at least one face of the supporting plate; separating the wastewater into filtered water and suspended solids by having the water wastewater permeate through the separation membrane; and having the filtered water flow toward the exterior from the filtered water outlet, wherein the flat separation membrane of each separation membrane element comprises a nonwoven fabric and a porous resin layer on at least one surface of the nonwoven fabric; the porous resin layer comprises a resin; a part of the resin permeates into the nonwoven fabric to form a composite layer with the nonwoven fabric; the porous resin layer has at its surface, pores having an average pore size in the range of 0.01 to 0.2 pm and a standard variation of pore sizes of 0.1 pm or less; and the nonwoven fabric has a thickness A of from 50 pm to 1 mm, the porous resin layer has a thickness B and the composite layer has a thickness C; and wherein the separation membrane satisfies: B > 0.2xA, and C/B >0.1; and macrovoids are present in the porous resin layer and have larger diameters than the diameter of pores at the surface and have a short diameter of 0.05xA or more; and supplying air from an air diffuser to the surfaces of the separation membranes of the separation membrane elements. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: fshida Pacheco Wang US 5,192,456 US 5,376,273 US 5,834,107 Mar. 9, 1993 Dec. 27, 1994 Nov. 10, 1998 3 Appeal 2014-009951 Application 11/979,277 The Examiner maintains the following grounds of rejection: Claims 1—4, 6, and 9 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. Claims 1—4, 6, and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ishida in view of Wang and Pacheco. We reverse the stated rejections. Our reasoning follows. In maintaining the rejection of claims 1—4, 6, and 9 under the second paragraph of 35 U.S.C. § 112, the Examiner urges that the claim 1 recitation of an average pore size range and a standard variation of pore sizes range runs afoul of the definiteness requirements of 35 U.S.C. § 112, second paragraph because; (1) “the standard deviation [variation] would only create a range within a range situation” given that “[t]he range of the average diameter of the membrane itself will define the allowable variation for the pore sizes in the membrane” and (2) “it is unclear how the standard deviation would be applied, when the claim recites a range for the average pore size” (Final Act. 3; claim l).1 According to Appellants, the claim 1 limitations in question furnish two different and reasonably definite pore size limitations for the flat separation membrane of each separation membrane element by requiring each flat separation membrane to have a porous resin layer and requiring that the pores at a resin layer surface of each such flat separation membrane 1 Our references to “Final Act.” herein are to the Final Office Action of January 30, 2014, from which Office action (Final Rejection) this appeal is taken. 4 Appeal 2014-009951 Application 11/979,277 must be such as to (1) have an average pore size falling within the average pore size range limitation set forth in claim 1 and (2) provide for a distribution of pore sizes for which the calculated standard variation (deviation) of pore sizes would furnish a value within the variation of pore sizes range claimed (App. Br. 10—13). The Declaration of Mr. Kenta Iwai filed Dec. 30, 2013 (Iwai Decl. I) is furnished in support of Appellants’ arguments (Iwai Decl. I, Tflf 5—8). We agree with Appellants in that the Examiner has not established, prima facie, that the claim language, in question, renders the rejected claims indefinite on the bases furnished by the Examiner, which are refuted by Appellants’ arguments (App. Br. 4—14; Iwai Decl. 1,17). The Examiner’s rebuttal position does not otherwise convey that the Examiner’s indefmiteness rejection is founded, prima facie, on a sustainable basis (Ans. 2-6). A long-standing test for claim indefmiteness in the examination context under the second paragraph of 35 U.S.C. § 112 can be stated as involving a determination as to whether the claims set out and circumscribe a particular area with a reasonable degree of precision and particularity when read in light of the application disclosure as they would be interpreted by one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Thus, claims are definite under Section 112, second paragraph if one of ordinary skill in this art would have been reasonably apprised of the scope of the claims, when the claim language is read in light of the specification. See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). 5 Appeal 2014-009951 Application 11/979,277 Here, the Examiner does not articulate, in the first instance, why the claim language in question, when read in light of the Specification from the perspective of one of ordinary skill in the art at the time of the invention, would not have reasonably apprised one of ordinary skill in the art of the scope of the rejected claims. Moreover, the Examiner’s response to arguments in the Answer does not particularly and persuasively address the substance of Appellants’ arguments traversing the Examiner’s rejection under the second paragraph of 35 U.S.C. § 112 as set forth in the Appeal Brief (Ans. 2—6; see Reply Br. 2—8). Appellants’ claim 1 provides for a determination of the standard deviation of pore sizes for a flat separation membrane by a calculated standard deviation value based on the particular pore size data set that a particular flat separation membrane possesses at a surface thereof as measured by scanning electron microscopy via observation of all the pores thereat with a particular scope and magnification as defined by Appellants in the Specification, which calculated value must fall within the claimed standard variation of pore sizes range (Spec. 4,11. 9—12; 10,11. 5—8; see Iwai Decl. 1,1 7 (pp. 3,7)). In other words, the latter methodology comprises the basis for determining the standard deviation value of the pore sizes that Appellants are claiming, which standard deviation value must fall within the claimed range as would be understood from the perspective of one of ordinary skill in the art when reading the claims in light of the subject Specification. On this record, we reverse the Examiner’s rejection of the appealed claims under the second paragraph of 35 U.S.C. § 112. 6 Appeal 2014-009951 Application 11/979,277 The Examiner’s obviousness rejection of claims 1—4, 6, and 9 under 35 U.S.C. § 103 over Ishida in view of Wang and Pacheco falls short in that the Examiner fails to carry the burden to establish a prima facie case of obviousness for reasons set forth by Appellants (App. Br. 14—31; Reply Br. 8-15). In particular, sole independent claim 1 is drawn to a method of treating sewage sludge wherein a particularly specified separation membrane module is immersed into wastewater containing activated sludge for separating the wastewater into filtered water and suspended solids by having the wastewater permeate through a flat separation membrane that forms part of each of the plural separation elements that, in turn, form at least a part of the immersed separation module. Each of the plural separation elements includes a supporting plate having a face on which its flat separation membrane is arranged. In addition, and as indicated above, claim 1 requires that the flat separation membrane of each separation membrane element comprises, inter alia, a nonwoven fabric having a porous resin layer on at least one surface of the fabric wherein the resin layer has pores of a specified average pore size and wherein the pores have a specified standard deviation as to the pore sizes at a surface of the resin layer. Further details of the claimed subject matter, including the separation membrane are set forth in claim 1, as reproduced above. The Examiner determines that Ishida teaches a process of treating sewage sludge using submerged membranes, including flat membranes, and an air diffuser but fails to teach details of the membrane and membrane material (Final Act. 5). The Examiner determines that Wang teaches a PVdF microporous asymmetric flat membrane with a resin layer cast on a 7 Appeal 2014-009951 Application 11/979,277 porous substrate, which resin layer has a porous surface that can include an average pore size as required by Appellants’ claim 1 (Final Act. 5). The Examiner finds that Wang describes pores of the resin layer surface that inherently have a standard deviation of pore sizes as required by Appellants’ claim 1 given that Wang teaches how to vary/tailor the average surface area diameter of the membranes and the SEM pictures depicted in Figures 2b “shows pretty uniform pores” (Final Act. 6; Ans. 7). The Examiner determines that several other features of the flat membrane of Wang correspond to features required by Appellants’ claim 1 and determines that Pacheco teaches a web and/or support thickness that would have been obvious to employ in Wang (Final Act. 7). The Examiner relies on background information said to be present in Wang as to certain properties of the PVdF membrane of Wang and based thereon, the Examiner determines that “it would have been obvious to one of ordinary skill in the art to choose the Wang membrane for use in Ishida because Ishida does not specify a membrane and Wang shows that the PVdF membrane has some very good qualities” (Final Act. 7).2 As further discussed below, the Examiner cites Miyashita3 and Taniguchi4 (previously made of record) in the Examiner’s Answer as rebuttal evidence for purposes of providing countervailing evidence that is argued by the Examiner to refute certain arguments made by Appellants based on additional evidence (previously made of record) that Appellants 2 Presumably he Examiner is proposing modifying Ishida by a modified Wang, in the manner that the Examiner proposes Wang should be modified by Pacheco. 3 U.S. Patent No. 6,325,938 B1 (Dec. 4, 2001). 4 U.S. Patent No. 6,495,041 B2 (Dec. 17, 2002). 8 Appeal 2014-009951 Application 11/979,277 continue to cite to as supporting evidence in contesting the propriety of the Examiner’s obviousness rejection (Ans. 9). However, Miyashita and Taniguchi are not included as part of the prior art references that the Examiner relies upon in the stated rejection for establishing a prima facie case as to the obviousness of the claimed subject matter. Nor are the latter references mentioned at all in the Final Action from which this appeal is taken. Appellants concede that Wang’s Table A discloses a membrane that possesses an average pore size of 0.1 microns (Reply Br. 9). Appellants argue, inter alia, that the Examiner has failed to present a prima facie case of obviousness because the Examiner has not furnished sufficient evidence and/or reasoning to establish that a flat membrane of Wang that includes an average pore size within the claimed range also inherently possesses a pore size variation at a surface of its resin layer that falls within the standard variation (deviation) range as required by Appellants’ claim 1 (App. Br. 16— 18; Reply Br. 9—10). We determine that Appellants’ argument indicates harm fill error in the Examiner’s position that Wang inherently/necessarily describes a membrane having a pore size variation as required by Appellants’ claim 1 for a membrane of Wang that otherwise satisfies the average pore size limitation of claim 1. The Examiner appears to employ an incorrect claim construction for Appellants’ claim 1 in urging the inherency of Appellants’ claim 1 standard variation of pore sizes limitation based on teachings of Wang with respect to varying the average pore size. The Examiner’s passing characterization of Figure 2b of Wang as appearing to show “pretty uniform pores” does not explain away what appear to be some significantly different 9 Appeal 2014-009951 Application 11/979,277 pore sizes in the microporous surface depicted in Figure 2b; moreover, Figure 2b is disclosed as showing approximately 0.5 micron (average) pore sizes rather than a porous surface having pores of an average size within the ranges set forth in Appellants’ claim 1 (Final Act. 5—6; Wang, col. 7,11. 25— 30; Fig. 7). In addition, Appellants contend that the Examiner has not established that one of ordinary skill in the art would have been prompted, prima facie, to choose a flat membrane of Wang (as further modified by Pacheco) and select a resin layer surface for the membrane having an average size and pore size variation, as required by claim 1 for use as the membrane of Ishida’s filter membrane module in a method of treating sewage-containing wastewater as taught by Ishida in a manner so as to correspond to the method of claim 1, particularly upon properly considering the evidence of record, including Appellants’ rebuttal evidence,5 anew in reaching such an obviousness determination (App. Br. 18—25; Reply Br. 10-13; Iwai Deck II). We concur with Appellants that the Examiner has not furnished a sufficient factual basis to reasonably establish an apparent reason why one of ordinary skill in the art would have been led to modify the process of Ishida by selecting/choosing a modified membrane of Wang that satisfies all of the limitations of filter module membrane features of claim 1 based on the combined teachings of Ishida, Wang, and Pacheco (Final Act. 7). As argued 5 Declaration of Kenta Iwai submitted March 15, 2013 (Iwai Deck II); Ueda et al. (Ueda), “DOMESTIC WASTEWATER TREATMENT BY A SUBMERGED MEMBRANE BIOREACTOR WITH GRAVITATIONAL FILTRATION”, Water Res, Vol. 33, No. 12, pp. 2888-2892 (1999); Kishino et al. (Kishino); “Domestic Wastewater reuse using a submerged membrane bioreactor”; Desalination 106 (1996), pp. 115—119. 10 Appeal 2014-009951 Application 11/979,277 by Appellants (Reply Br. 11—13), the Examiner appears to utilize the further teachings of Taniguchi and Miyashita for an asserted general teaching as to the use of membranes with small pore sizes in sewage filtration without articulating how the applied prior art would have suggested the use of a flat separation membrane possessing all of the features of claim 1 based on the combination of the teachings of the applied references together with the teachings of Taniguchi and Wang. As noted above, the Examiner did not include Taniguchi and Miyashita as part of the evidence relied upon in the rejection statement.6 Accordingly, we reverse the Examiner’s obviousness rejection. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. REVERSED 6 In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.”). 11 Copy with citationCopy as parenthetical citation